Forum Selection Clause Can Prevent IPR Fights
Sung-Hoon Kim | March 25, 2022
Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.
Decided on February 8, 2022
Lourie (author), Newman, and Stoll
Summary:
The Federal Circuit reversed the district decision’s denial of a preliminary injunction for Nippon Shinyaku because its agreement with Sarepta was clear to exclude filing IPR petitions, and Sarepta’s filing of IPR petitions clearly breached the agreement with Nippon Shinyaku.
Details:
On June 1, 2020, Nippon Shinyaku and Sarepta Therapeutics, Inc. (“Sarepta”) executed a Mutual Confidentiality Agreement (“MCA”) to enter into discussions for a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy (“DMD”).
Section 6 of the MCA included a mutual covenant not to sue during the Covenant Term[1]:
shall not directly or indirectly assert or file any legal or equitable cause of action, suit or claim or otherwise initiate any litigation or other form of legal or administrative proceeding against the other Party . . . in any jurisdiction in the United States or Japan of or concerning intellectual property in the field of Duchenne Muscular Dystrophy.
Section 6 further stated:
For clarity, this covenant not to sue includes, but is not limited to, patent infringement litigations, declaratory judgment actions, patent validity challenges before the U.S. Patent and Trademark Office or Japanese Patent Office, and reexamination proceedings before the U.S. Patent and Trademark Office . . . .
After the expiration of the Covenant Term, the forum selection clause in Section 10 of the MCA is applied:
[T]he Parties agree that all Potential Actions arising under U.S. law relating to patent infringement or invalidity, and filed within two (2) years of the end of the Covenant Term, shall be filed in the United States District Court for the District of Delaware and that neither Party will contest personal jurisdiction or venue in the District of Delaware and that neither Party will seek to transfer the Potential Actions on the ground of forum non conveniens.
Here, “Potential Actions” is defined as “any patent or other intellectual property disputes between [Nippon Shinyaku] and Sarepta, or their Affiliates, other than the EP Oppositions or JP Actions, filed with a court or administrative agency prior to or after the Effective Date in the United States, Europe, Japan or other countries in connection with the Parties’ development and commercialization of therapies for Duchenne Muscular Dystrophy.”
The Covenant Term ended on June 21, 2021, at which point the two-year forum selection took effect. On June 21, 2021, Sarepta filed seven petitions for IPR.
District Court
On July 13, 2021, Nippon Shinyaku filed a complaint in the U.S. District Court for the District of Delaware asserting claims against Sarepta for breach of contract, among other things. Nippon Shinyaku alleged that Sarepta breached the MCA by filing seven IPR petitions. Nippon Shinyaku filed a motion for a preliminary injunction to enjoin Sarepta from proceeding with IPR petitions.
On September 24, 2021, the district court denied Nippon Shinyaku’s motion for a preliminary injunction and issued its memorandum order with the following reasons:
- There would be a “tension” that would exist between Sections 6 and 10 if the forum selection clauses were interpreted to exclude IPRs.
- Section 10 applies only to cases filed in federal court.
- Practical effects of interpreting Section 10 as excluding IPRs for two years following the Covent Term.
- Finally, Nippon Shinyaku did not meet its burden on second (suffer irreparable harm), third (balance of hardship), fourth (public interest) PI factors in order to obtain a preliminary injunction.
Federal Circuit
The CAFC reviewed a denial of a preliminary injunction using the law of the regional circuit (Third Circuit) for abuse of discretion.
The CAFC focused on the court’s interpretation of the MCA.
Based on the plain language of the forum selection clause in Section 10 of the MCA, the CAFC held that the forum selection clause is unambiguous because the definition of “Potential Actions” includes “patent or other intellectual property disputes… filed with a court or administrative agency,” and the district court acknowledged that the definition of Potential Actions literally encompasses IPRs.
The CAFC held that under the plain language of Section 10, Sarepta should have brought all disputes regarding the invalidity of Nippon Shinyaku’s patents in the District of Delaware.
The CAFC rejected Sarepta’s argument that IPR petitions must be filed in the federal district court in Delaware. Also, the CAFC held that there is no conflict or tension between Sections 6 and 10. The CAFC noted that this reflects harmony, not tension between two sections and this framework is “entirely consistent with our interpretation of the plain meaning of the forum selection clause.”
Finally, the CAFC noted that other factors of a preliminary injunction favored Nippon Shinyaku. As for irreparable harm, the CAFC agreed with Nippon Shinyaku’s argument that they would be “deprived of its bargained-for choice of forum and forced to litigate its patent rights in multiple jurisdictions.” As for balance of hardships, Nippon Shinyaku would suffer the irreparable harm, and Sarepta would potentially get multiple chances at a forum it bargained away. As for public interest, the CAFC rejected any notion that there is “anything unfair about holding Sarepta to its bargain.”
Therefore, the CAFC reversed the decision of the district court and remanded for entry of a preliminary injunction.
Takeaway:
- Companies will need to be extra careful when drafting nondisclosure and joint development agreements now that the CAFC held that clauses in those agreements can give up right to file challenges at the PTAB.
- Contracts can be used to waive the right to AIA review.
- This is a cautionary tale for attorneys to start paying attention to boilerplate parts of contracts.
- This is the first time that the CAFC held that it is not again the public interest to have forum selection clauses that exclude PTAB proceedings.
[1] Covenant Term is defined as “the time period commencing on the Effective Date and ending upon twenty (20) days after the earlier of: (i) the expiration of the Term, or (ii) the effective date of termination.”
Tags: contract > IPR > Patent Trial and Appeal Board (PTAB) > preliminary injunction
Broadcom Wi-Fi chips, and Apple smartphones, tablets and computers held responsible for patent infringements
WHDA Blogging Team | March 18, 2022
California Institute of Technology v. Broadcom Ltd.
Decided on February 4, 2022
Lourie, Linn (Senior), and Dyk. Court opinion by Linn. Concurring-in-part-and-dissenting-in-part Opinion by Dyk.
Summary
On appeals from the district court for the judgment of infringement of patents in favor of Caltech, the patentee, against Broadcom totaling $288,246,156, and against Apple totaling $885,441,828 and denial of JMOL on infringement thereof, the Federal Circuit affirmed the district court’s denial of the JMOL because the Court was not persuaded that the district court erred in construing the term “repeat” in the claim of the patent in issue, and that the record before the jury permits only a verdict of no infringement. Judge Dyk filed a dissenting opinion regarding the denial of JMOL on infringement.
Details
I. Background
The California Institute of Technology (“Caltech”) filed an infringement suit against Broadcom Limited, Broadcom Corporation, and Avago Technologies Ltd. (collectively “Broadcom”) and Apple Inc. (“Apple”) at the District Court for the Central District of California (“the district court”). Caltech alleged infringement of its U.S. Patents No. 7,116,710 (“the ’710 patent”), No. 7,421,032 (“the ’032 patent”), and No. 7,916,781 (“the ’781 patent”) by certain Broadcom Wi- Fi chips and Apple products incorporating those chips, including smartphones, tablets, and computers. The accused Broadcom chips were developed and supplied to Apple pursuant to Master Development and Supply Agreements negotiated and entered into in the United States.
While the case involves several issues regarding these patents, this case review focuses on the issue of claim construction regarding the term “repeat” in the ’710 patent.
Caltech argued that the accused chips infringed claims 20 and 22 of the ’710 patent. Claims 20 and 22 of the ’710 patent depend from claim 15, which provides:
15. A coder comprising: a first coder having an input configured to receive a stream of bits, said first coder operative to repeat said stream of bits irregularly and scramble the repeated bits; and a second coder operative to further encode bits output from the first coder at a rate within 10% of one. (emphasis added)
Caltech specifically identified as infringing products two encoders contained in the Broadcom chips- a Richardson-Urbanke (“RU”) encoder and a low-area (“LA”) encoder. In the accused encoders, incoming information bits are provided to AND gates in the RU encoder or multiplexers in the LA encoder.
In its brief , Broadcom presents the following table, using the example of the functioning of a single AND gate, to show how outputs are determined by the two inputs:
| Input 1 (Information Bit) | Input 2 (Parity-Check Bit) | AND Gate Output |
| 0 | 0 | 0 |
| 0 | 1 | 0 |
| 1 | 0 | 0 |
| 1 | 1 | 1 |
For each AND gate, the output of the gate is 1 if both inputs (the information bit and the parity-check bit) are l ; otherwise, the output is 0. One consequence of this logic is that if the parity-check bit is 1 (as shown in rows two and four), then the output is identical to the information-bit input. If the parity-check bit is 0, the output is 0, 1regardless of the value of the input (rows one and three).
For the claim construction regarding the term “repeat” in the ’710 patent, Caltech advocated for the term’s plain and ordinary meaning. In contrast, Apple and Broadcom proposed a narrower construction, contending that “repeat” should be construed as “creating a new bit that corresponds to the value of an original bit (i.e., a new copy) by storing the new copied bit in memory. A reuse of a bit is not a repeat of a bit.” (emphasis added)
In pre-trial, at the conclusion of the Markman hearing, the district court construed the term “repeat” to have its plain and ordinary meaning and noted that the repeated bits “are a construct distinct from the original bits from which they are created,” but that they need not be generated by storing new copied bits in memory.
During trial, the district court instructed the jury that the term “repeat” means “generation of additional bits, where generation can include, for example, duplication or reuse of bits.” (emphasis added) Apple and Broadcom then argued that the chips did not infringe the ’710 patent because they did not repeat information bits at all, much less irregularly. The jury ultimately found infringement of all the asserted claims. Broadcom and Apple filed post-trial motions for JMOL and a new trial, challenging the jury’s infringement verdict. The district court denied JMOL, finding no error in its claim construction ruling and concluding that the verdict was supported by substantial evidence.
The district court entered judgment against Broadcom totaling $288,246,156, and against Apple totaling $885,441,828. These awards included pre-judgment interest, as well as post-judgment interest and an ongoing royalty at the rate set by the jury’s verdict.
Broadcom and Apple appealed.
II. The Federal Circuit
The Federal Circuit (“the Court”) affirmed the district court’s construction of the term “repeat” and JMOL on Infringement.
1. Claim Construction of “repeat”
Broadcom and Apple argued that the district court erroneously construed the term “repeat,” contending that the accused AND gates and multiplexers do not “repeat” information bits in the manner claimed, but instead combine the information bits with bits from a parity-check matrix to output new bits reflecting that combination. Broadcom and Apple further argue that the AND gates and multiplexers also do not generate bits “irregularly,” asserting that they output the same number of bits for every information bit.
The Court was not persuaded. The Court stated that the district court correctly observed that the claims require repeating but do not specify how the repeating is to occur: “The claims simply require bits to be repeated, without limiting how specifically the duplicate bits are created or stored in the memory.” (emphasis added) The Court further stated that the specifications confirm that construction and describe two embodiments, neither of which require duplication of bits.
2. JMOL on Infringement
Broadcom and Apple argued that, looking at each gate alone and the “repeat” requirement, AND gate does not “repeat” the inputted information bit “because the AND gate’s output depends on not only the information bit but also the parity-check-matrix bit.”
In contrast, Caltech argued that, considering the system as a whole, each information bit is in fact repeated, and they are not all repeated the same number of times. To support Caltech’s position, Caltech’s expert, Dr. Matthew Shoemake explained that in the parity-check-bit-equals-1 situation (second and fourth rows of the table), the output bit is a “repeat” of the information- bit input. Where the parity-check bit is 1, the gate affirmatively enables the information bit to be duplicated as the output bit. That is a ‘repeat’ … because the information bit in that situation ‘flows through’ to appear again in the output.”
The Court sided Caltech, and affirmed the district court’s denial of JMOL.
III. Concurring-in-part-and-dissenting-in-part Opinion
Judge Dyk disagreed with the majority’s holding that substantial evidence supports the jury’s verdict of infringement of the asserted claims of the ’710 patent (and the ’032 patent) and stated that he would reverse the district court’s denial of JMOL of no literal infringement.
Given that the district court constructed the term “repeat” to mean “generation of additional bits, where generation can include, for example, duplication or reuse of bits,” Judge Dyk located the critical question to be whether there is substantial evidence that the accused devices cause “generation of additional bits.” Judge Dyk then pointed out that the problem for Caltech (and for the majority) is that Caltech never established that the accused devices generate “additional bits,” as required by the district court’s claim construction.
The infringement theory presented at trial explained that the accused devices work as follows: information bits are input into the accused devices, those bits travel down branched wires to the inputs of 972 AND gates, and three to twelve of those AND gates will be open for each information bit, thus outputting the bits a different number of times. In Judge Dyk’s view, for this theory to satisfy Caltech’s burden, Caltech was required to establish where, when, and how additional bits were generated. Judge Dyk stated the record does not support a theory that the branched wires generate additional bits.
Winning on Objective Indicia of Non-Obviousness in an IPR
John Kong | March 11, 2022
Quanergy Systems, Inc.. v. Velodyne Lidar USA, Inc.
Opinion by: O’Malley, Newman, and Lourie
Decided on February 4, 2022
Summary:
The Federal Circuit affirmed the PTAB’s validity decisions in two IPRs for Velodyne’s patent on lidar, relying substantially on Velodyne’s objective evidence of non-obviousness. Quanergy’s appeal attacked the PTAB’s presumption of a nexus between Velodyne’s product and the claimed invention. In particular, Quanergy challenged the nexus presumption by arguing that there were unclaimed features that attributed to the significance of Velodyne’s products, instead of the claimed invention. The Federal Circuit found the PTAB’s reasoning for how each alleged unclaimed feature resulted directly from claim limitations – such that Velodyne’s products are essentially the claimed invention – were found to be both adequate and reasonable.
Procedural History:
Quanergy Systems, Inc. (Quanergy) challenged the validity of Velodyne Lidar USA, Inc. (Velodyne) U.S. Patent 7,969,558 in two inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) as being obvious. The PTAB sustained the validity of the ‘558 patent. The Federal Circuit affirmed the PTAB’s decision.
Background:
The ‘558 patent relates to a lidar-based 3-D point cloud measuring system, useful in autonomous vehicles. “Lidar” is an acronym for “Laser Imaging Detection and Ranging.” Lidar technology uses a pulse of light to measure distance to objects. Each pulse of light for measurement results in one “pixel” and a collection of pixels is called a “point cloud.” A 3-D point cloud may be achieved by making measurements with the light pulses in up-down directions, as well as in 360 degrees. Representative claim 1 is as follows:
A lidar-based 3-D point cloud system comprising:
a support structure;
a plurality of laser emitters supported by the support structure;
a plurality of avalanche photodiode detectors supported by the support structure; and
a rotary component configured to rotate the plurality of laser emitters and the plurality of avalanche photodiode detectors at a speed of at least 200 RPM.
Quanergy relied on a Mizuno reference that uses a “triangulation system” measuring the distance to an object by detecting light reflected from the object to image sensors. Quanergy also relied on a Berkovic reference that teaches the triangulation technique, as well as a time-of-flight sensing technique. To win on obviousness, Quanergy relied on a broad interpretation of “lidar” to encompass both triangulation systems and “pulsed time-of-flight (ToF) lidar.”
However, the PTAB construed “lidar” to mean pulsed time-of-flight lidar because the ‘558 specification exclusively focuses on pulsed time-of-flight lidar in which distance is measured by the “time” of travel (i.e., flight) of the laser pulse to and from an object. The PTAB also found that Mizuno does not address a time-of-flight lidar system. Instead, Mizuno’s triangulation system is a short-range measuring device. And, the PTAB held that the skilled artisan would not have had a reasonable expectation of success in modifying Mizuno’s device to use pulsed time-of-flight lidar because Quanergy’s expert did not explain how or why a skilled artisan would have had an expectation of success in overcoming the problems in implementing a pulsed time-of-flight sensor in a short range measurement system such as that of Mizuno’s. Indeed, the Berkovic reference was found to suggest that the accuracy of pulsed time-of-flight lidar measurements degrades in shorter ranges, such as in Mizuno’s system.
But, more importantly, the PTAB relied substantially on Velodyne’s objective evidence of non-obviousness, which “clearly outweighs any presumed showing of obviousness by Quanergy” even if Quanergy satisfied obviousness with respect to the first three of the four Graham v John Deere factors (i.e., (1) scope and content of the prior art, (2) difference between the prior art and the claims at issue, (3) level of ordinary skill in the pertinent art, and (4) any objective indicia of nonobviousness).
Decision:
As for the initial claim construction issue regarding “lidar,” the Federal Circuit agreed with the strength of the intrinsic record focusing exclusively on pulsed time-of-flight lidar, collecting time-of-flight measurements, and taking note of the specification’s boasted ability to “collect approximately 1 million time of flight (ToF) distance points per second, overcoming commercial point cloud systems inability to meet the demands of autonomous vehicle navigation. Indeed, the court found Quanergy’s arguments for a broader construction to be inconsistent with the specification and therefore unreasonable.
Quanergy also challenged the PTAB’s presumption of a nexus between the claimed invention and Velodyne’s evidence of an unresolved long-felt need, industry praise, and commercial success.
To accord substantial weight to Velodyne’s objective evidence, that evidence must have a “nexus” to the claims, i.e., there must be a “legally and factually sufficient connection” between the evidence and the patented invention.
The Federal Circuit may presume a nexus to exist “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is co-extensive with them.” This co-extensiveness does not require a patentee to prove perfect correspondence between the product and the patent claim. Instead, it is sufficient to demonstrate that “the product is essentially the claimed invention.” In this analysis, “the fact finder must consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” “Some unclaimed features ‘amount to nothing more than additional insignificant features,’ such that presuming nexus is still appropriate.” “Other unclaimed features, like a ‘critical’ unclaimed feature that is claimed by a different patent and that materially impacts the product’s functionality, indicate that the claim is not coextensive with the product.”
This presumption of a nexus is rebuttable. However, a patent challenger may not rebut the presumption of nexus with argument alone. The patent challenger may present evidence showing that the proffered objective evidence was “due to extraneous factors other than the patented invention” such as unclaimed features or external factors like improvements in marketing or superior workmanship.
Here, Quanergy argued that the PTAB failed to consider the issue of unclaimed features before presuming a nexus and failed to provide an adequate factual basis or reasoned explanation dismissing the unclaimed features argument. Quanergy argued that Velodyne’s evidence relies on unclaimed features, including high frame-rate, dense 3D point cloud with a wide field of view and collecting measurements in an outward facing lidar for 360 degree azimuth and 26 degree vertical arc. And, such unclaimed features are critical and materially impact the functionality of Velodyne’s products. Therefore, the requisite presumption of a nexus does not exist.
However, the court found that the PTAB considered, and adequately/reasonably did so, the unclaimed features arguments, reasonably finding that Veloydyne’s products embody the full scope of the claimed invention and that the claimed invention is not merely a subcomponent of those products. First, the PTAB credited Velodyne’s expert testimony providing a detailed analysis mapping claim 1 to description of Velodyne’s product literature. Second, the claims call for a 3-D point cloud and the density of the cloud and the 360 degree horizontal field of view (i.e., the ”unclaimed features”) “result directly” from the limitation for “[rotating] the plurality of laser emitters and the plurality of avalanche photodiode detectors at a speed of at least 200 RPM.” The “3-D” feature necessarily infers both horizontal and vertical fields of view. The PTAB also pointed to (1) contemporaneous news articles describing the long-felt need for a lidar sensor that could capture points rapidly in all directions and produce a sufficiently dense 3-D point cloud for autonomous navigation, (2) articles praising Velodyne as the top lidar producer and Velodyne’s products, and (3) financial information and articles reflecting Velodyne’s revenue and market share to show commercial success.
The court also found the PTAB’s analysis of those unclaimed features arguments to be commensurate with Quanergy’s presentation of the issue. Here, the court found Quanergy’s unclaimed features arguments to be merely skeletal, undeveloped arguments. In contrast, the PTAB’s explanation of how each alleged unclaimed feature results directly from claim limitations – such that Velodyne’s products are essentially the claimed invention – were found to be both adequate and reasonable.
Quanergy also presented new arguments (not previously presented to the PTAB) that, to obtain the dense 3-D point cloud, Velodyne’s products require the unclaimed critical features of (1) more than 2 laser emitters, (2) a high pulse rate, (3) vertical angular separation between pairs of emitters and detectors, and (4) a rotation speed significantly greater than 200 RPM. However, the court held that these new arguments, presented only on appeal, were forfeited.
Takeaways:
- This case is a good primer for how to best present or attack objective indicia of non-obviousness.
- One key to success for objective indicia of non-obviousness is expert testimony mapping claimed features to product literature and explaining how and why that description of the product is essentially the claimed invention. Other helpful evidence includes contemporaneous news articles about the long-felt need, praise for the subject product, and financial information/articles showing the company’s commercial success, presumably tied to the subject product.
- If unclaimed features are asserted to attack a presumption of nexus, expert testimony explaining how those alleged unclaimed features are direct results from claimed limitations, so as to side step the attack, is helpful.
- Skeletal arguments are insufficient. If making an unclaimed features argument, it is best to flesh it out before the PTAB in detail, otherwise it will be considered forfeited if newly presented on appeal.
CLAIMS ARE VIEWED AND UNDERSTOOD IN THE CONTEXT OF THE SPECIFICATION AND THE PROSECUTION HISTORY
Bo Xiao | March 7, 2022
Nature Simulation Systems Inc., v. Autodesk, Inc.
Before NEWMAN, LOURIE, and DYK, Circuit Judges. Opinion for the court filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge DYK.
Summary
The Federal Circuit ruled in a split decision that the United States District Court for the Northern District of California erred in invalidating Nature Simulation System’s patents as indefinite.
Background
NSS sued Autodesk for allegedly infringing US Patents No. 10,120,961 (“the ’961 patent”) and No. 10,109,105 (“the ’105 patent”). The ’961 patent is a continuation-in-part of the ’105 patent, and both are entitled “Method for Immediate Boolean Operations Using Geometric Facets” directed to a computer-implemented method for building three-dimensional geometric objects using boolean operation.
The district court held a claim construction (Markman) hearing and subsequently ruled the claims invalid on the ground of claim indefiniteness, 35 U.S.C. § 112(b). In the hearing, Autodesk presented an expert declaration to request the construction of eight claim terms. NSS argued that construction is not necessary and the challenged terms should receive their ordinary meaning in the field of technology. The district court did not construe the terms. The district court explained that a claim term is indefinite, as a matter of law, if there are any “unanswered questions” about the term. The decision of the district court was based on two of the challenged terms in clauses [2] and [3] of Claim 1:
1. A method that performs immediate Boolean operations using geometric facets of geometric objects
implemented in a computer system and operating with a computer, the method comprising:
[1] mapping rendering facets to extended triangles that contain neighbors;
[2] building intersection lines starting with and ending with searching for the first pair of triangles that hold a start point of an intersection line by detecting whether two minimum bounding boxes overlap and performing edge-triangle intersection calculations for locating an intersection point, then searching neighboring triangles of the last triangle pair that holds the last intersection point to extend the intersection line until the first intersection point is identical to the last intersection point of the intersection line ensuring that the intersection line gets closed or until all triangles are traversed;
[3] splitting each triangle through which an intersection line passes using modified Watson method, wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
[4] checking each triangle whether it is obscure or visible for Boolean operations or for surface trimming;
[5] regrouping facets in separate steps that includes copying triangles, deleting triangles, reversing the normal of each triangle of a geometric object, and merging reserved triangles to form one or more new extended triangle sets; and
[6] mapping extended triangles to rendering facets.
The two terms are “searching neighboring triangles of the last triangle pair that holds the last intersection point” and “modified Watson method.” The district court stated that even if the questions are answered in the specification, the definiteness requirement is not met if the questions are not answered in the claims. NSS argued that on the correct law the claims are not indefinite.
Discussion
The Federal Circuit cited the opinion in Nautilus and emphasized that the claims are viewed and understood in the context of the specification and the prosecution history, as the Court summarized in Nautilus (Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014) ).
The district court held the claims indefinite based on the “unanswered questions” that were suggested by Autodesk’s expert, as stated in the Declaration:
¶ 27. [T]he claim language, standing alone, does not specify which of those neighboring, intersecting triangles should be used to identify additional intersection points. Nor does the claim specify (where there are multiple potential intersection points for a given pair of neighboring triangles) which of the multiple potential intersection points should be used to extend the intersection line. Thus, the claim language is indefinite.
The Federal Circuit states that the “unanswered questions” is an incorrect standard and specifically pointed out that “ ‘Claim language, standing alone’ is not the correct standard of law, and is contrary to uniform precedent.” The Federal Circuit found that the district court did not consider the information in the specification that was not included in the claims and the district court misperceived the function of patent claims.
The Federal Circuit also noted that the court did not discuss the Examiner’s Amendment. During the prosecution of the ‘961 patent, the examiner discussed with the inventor and later suggested an amendment in the Notice Of Allowance to clarify the disputed language. The examiner suggested amending claim 1 and then withdrew the rejection based on the amendment. The amendment includes the limitation of the term in clause [3] as follows:
[3] splitting each triangle through which an intersection line passes using modified Watson method, wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
The Federal Circuit noted that the district court did not discuss the Examiner’s Amendment and held that the claims are invalid since the questions raised by Autodesk’s expert were not answered. The Federal Circuit found that the district court fails to give proper weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. The Federal Circuit further explained that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” The Federal Circuit stated that “[i]t is not disputed that the specification describes and enables practice of the claimed method, including the best mode. The claims, as amended during prosecution, were held by the examiner to distinguish the claimed method from the prior art and to define the scope of the patented subject matter.”
Judge Dyk dissented from the majority and opined that the district court had read the patent claims in light of the specification to determine if it would inform those skilled in the art about the scope of the invention with reasonable certainty, which is exactly what is required under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Judge Dyk also states that the majority simply does not address the problem that the limitations are “not describe[d]” in the patent, “ambiguous” and “unclear,” and “inconsistent with” Figure 13 and the accompanying text. In his view, the test for definiteness is whether the claims “inform those skilled in the art about the scope of the invention with reasonable certainty,” but the majority relied on the fact that these limitations were suggested by the patent examiner.
Takeaway
- Claims are viewed and understood in the context of the specification and the prosecution history.
- Patent claims must provide sufficient clarity to inform about the scope of the invention with reasonable certainty.
